WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. Alston Liu

Case No. D2019-2691

1. The Parties

The Complainant is Alstom, France, represented by Lynde & Associés, France.

The Respondent is Alston Liu, Canada.

2. The Domain Name and Registrar

The disputed domain name <alstonpower.com> is registered with 1&1 IONOS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2019. On November 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2019, the Registrar transmitted by email to the Center its verification response:

(a) it is the Registrar for the disputed domain name;

(b) the disputed domain name was first registered on December 10, 2005;

(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name; and

(e) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on November 7, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 11, 2019.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 9, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a French company, the business of which was founded in 1928. It is a very substantial business operating particularly in the field of energy and transport infrastructure employing some 36,600 employees in more than 60 countries around the world. These countries include Canada, where it has been operating for some 80 years. Its global revenues in 2018/2019 were EUR 12.1 billion.

The Complainant has numerous registered trademarks for ALSTOM including:

- Canadian Registered Trademark No. TMA 562412 in International Classes1, 2, 3, 4, 6, 7, 9, 10, 11, 12, 13, 14, 16, 17, 18, 19, 20, 21, 24, 29, 35, 36, 37, 38, 39, 40, 41, 42 and 44 which was registered on May 23, 2002 based on the priority of French Registered Trademark No. 98/727,759 filed on April 10, 1998;

- International Registration No. 706292 which was filed on August 28, 1998 in the same International Classes (except class 44) and designating numerous countries around the world.

The Complainant also has numerous trademark registrations for ALSTOM (with a fancy “O”) including:

- Canadian Registered Trademark No. TMA 585660 in the same International Classes which was registered on July 21, 2003 based on the priority of French Registered Trademark No. 98/727,762 filed on April 10, 1998;

- United States Registered Trademark No. 4,311,549 which was registered on February 4, 2013 in International Classes 1, 6, 7, 9, 12, 13, 17, 19, 24, 35, 37, 38, 39, 40, 41, 42 and 45; and

- International Registration No. 706360 which was registered on August 28, 1998 in International Classes 1, 2, 3, 4, 6, 7, 9, 10, 11, 12, 13, 14, 16, 17, 18, 19, 20, 21, 24, 29, 35, 36, 37, 38, 39, 40, 41 and 42 and designating numerous countries around the world.

The Complainant also has registered numerous domain names including <alstompower.com> which the Complainant registered on March 31, 2000. The Complainant’s domain names now resolve to the Complainant’s website at “www.alstom.com”, which the Complainant first registered on June 20, 2000.

Since the Complainant became aware of the disputed domain name in early 2018, the disputed domain name has resolved to a “parking page”-type website which features a number of pay-per-click type links to “Alstom Power”, “Alstom Transport”, “Alstom Group”, “Hydro”, “ABB” and similar.

5. Discussion and Findings

No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks identified in section 4 above.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11. Where a trademark includes figurative elements, the usual practice under the Policy is to disregard graphic elements of a trademark due to the inability to represent them in the domain naming system unless the figurative elements are the dominant portion of the trademark so that the textual elements have been overtaken: e.g., WIPO Overview 3.0, section 1.10.

In the present case, the disputed domain name differs from the Complainant’s trademark in block capitals in three ways: (a) the letter “n” in place of “m”, (b) the addition of the word “power” and the generic Top-Level Domain (gTLD), “.com”. These changes are too insignificant to avoid a finding of confusing similarity.

As the Complainant points out, the letter “n” is next to the letter “m” on the standard “QWERTY” keyboard. Aurally, the two letters at the end of the word element “alsto” sound very similar. Objectively the change presents as a common, obvious or intentional misspelling of the Complainant’s trademark often referred to as “typosquatting”. See e.g. WIPO Overview 3.0, section 1.9.

The word “power” is an ordinary English word which does not dispel the perceptible presence of the Complainant’s trademark and indeed reinforces the potential. See e.g. WIPO Overview 3.0, section 1.7.

Taken together, disregarding the “.com” gTLD and viewed as a whole, therefore, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks. The considerations set out above apply equally to the trademark form with the slightly stylised letter “O”.

Accordingly, the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states unequivocally that it has not authorised the Respondent to use or register the disputed domain name. Nor is the Respondent in any way associated with the Complainant.

The first two syllables of the disputed domain name are the same as the Respondent’s first name as recorded in the WhoIs record. The Panel is aware of it being an English language surname. It is possible that “Alston” is the Respondent’s name.

Where a respondent claims that a disputed domain name has been derived from the respondent’s own name, panels typically require some form of proof that the name is in fact the respondent’s name. See e.g. WIPO Overview 3.0, section 2.3. The “proof” may also include an explanation about how the name came to be adopted. No such proof has been advanced by the Respondent here.

Moreover, paragraph 4(c)(ii) of the Policy is intended to protect from the sanctions under the Policy people who are using their own names legitimately and in good faith. The use of the disputed domain name in the present case to resolve to a parking page with PPC links related to the energy and transport industries does not qualify as a good faith use under the Policy. The disputed domain name is not being used in connection with a person whose name is “Alston”, but to take advantage of the reputation and trademark significance of the Complainant’s trademark. The adoption and use of the disputed domain name in these circumstances does not qualify as a good faith use of the disputed domain name derived from the Respondent’s apparent name.

Accordingly, the Panel finds that the Complainant has established a sufficient prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy. The Respondent has not sought to rebut that prima facie case.

The Complainant has therefore established the second requirement under the Policy.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Paragraph 4(b) identifies situations which may demonstrate that registration or use of a disputed domain name was not in bad faith under the Policy:

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith:

(i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or

(ii) [the Respondent has] registered the [disputed] domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] web site or location.

The way the Respondent is using the disputed domain name appears to fall squarely within the type of conduct that paragraph 4(b)(iv) is directed against.

The disputed domain name was first registered on December 10, 2005. The information provided by the Registrar states this was the date the disputed domain name was registered in the Respondent’s name.

The Complainant has provided a WhoIs Lookup Report from Domain Tools which states that the “IP History” has had 10 changes on 10 unique IP addresses over 14 years and that there have been two registrars with “3 drops”. The Complainant states this indicates that there have been 10 ownership changes over the 14 year period. That may be the case, but no details have been provided about the different (if any) owners or registrars. In those circumstances, the Panel is not prepared to discount the information supplied by the Registrar. The Panel does note, however, that even in 2005, the Complainant had been in existence for over 70 years, including in Canada, and its trademark was very widely used and well-established.

The two verbal elements making up the disputed domain name (apart from the gTLD) are not the Respondent’s name as recorded with the Registrar. The Respondent has not made any attempt to support his registration of the disputed domain name on the basis that he is commonly known as “Alston Power” or any other basis on which he might in good faith have sought to register the disputed domain name.

Bearing in mind how long and how extensively the Complainant has been using its trademark and having regard to the way the Respondent is using the disputed domain name, it appears likely that the Respondent registered the disputed domain name to take advantage of its resemblance to the Complainant’s trademark. Accordingly, on the record in this case, the Panel infers that the disputed domain name was also registered in bad faith.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <alstonpower.com> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: December 23, 2019